Can Unregistered Trademarks be Assigned?

Trademarks are often utilized as markings, like words, logos, or word combinations with other symbols, that help distinguish the designated brand’s goods and services from those of other brands that are available in the market. Identifying and defining the specific product or service associated with a particular brand is the objective of a trademark.

One type of intellectual property is a trademark, which can be registered or unregistered. Trademarks are transferable between owners, just similar to any other asset. Licenses allow for temporary transfers, whereas assignments result in permanent transfers. However, for unregistered marks, common law protection is available.

What is Unregistered Trademark?

Unregistered trademarks can seek protection under the common law tort of passing off, even though the Act prohibits them from being sued for violation. However, it is necessary to prove that the unregistered mark has been associated with a reputable product, service or business in order for a legal action for infringement to succeed.

What does it mean to assign a trademark?

Trademark assignment is the process by which the owner or holder transfers ownership and rights to a different person. Trademark assignment, to put it in other terms, is the transfer of ownership rights, interest, and title of a trademark owner.

Ownership is transferred from one person to another by the assignor and assignee, respectively.

Which person is able to assign a trademark?

It is the owner’s name that can be found on the trademark registration that is entitled to assign a trademark, as per Section 37 of Trade Marks Act of 1999. However, it will be governed by the act’s requirements.

Assignments of trademarks are therefore allowed under Indian law.

Is it possible to assign a trademark that is not registered?

Section 39 of the Trade Marks Act, 1999 specifically refers to unregistered marks. It further states that even if the mark is not registered, it may be granted or transferred without the consent of the relevant business. An assignment of an unregistered trademark requires a request to be made using form TM-16.

Advantages of Trademark Assignment and Transmission

• Business expansion: A trademark can be assigned and transmitted, allowing its owner to use it at several places at the same time and grow their business. Moreover, partial authority to assign the trademark may be provided to many people.
• Using an established brand: One can profit from an established brand in the industry without having in order to invest the time and the materials needed to create a new one by assigning and transferring a trademark.
• Legal evidence: The assignment and transmission of a trademark are considered legal evidence if there is a disagreement over trademark usage. Additionally, using the identical trademark throughout several markets can raise the brand’s worth.

Categories of Trademark Assignment

Following are the kinds of Trademark assignment in India:

• Complete Assignment: The assignor transfers all rights to the registered trademark to the assignee under the terms of the complete assignment.
• Partial Assignment: The assignor merely transmits a part of the ownership with respect to particular goods or services under the terms of the partial assignment.
• Assignment with goodwill: Trade-mark Goodwill assignments are those in which the trademark’s rights and value are willingly transmitted to a third party.
• Assignment without goodwill: In this type of assignment, the purchaser is not granted full ownership by the brand owner. The term “gross assignment” also pertains to assignments that are given without consideration.

Challenges in Assigning Unregistered Trademarks in India

Due to usage-based protection and the lack of official trademark registration, assigning unregistered trademarks in India presents specific challenges. Important obstacles consist of:

• Establishing Validity: Careful documentation of the trademark’s history and recognizability is required to demonstrate its validity and distinctiveness in the absence of a formal registry.
• Geographic Restrictions: Unregistered trademarks in India are subject to territorial restrictions, so the assignment agreement must specifically outline the areas that are covered.
• Risk of Third-Party Claims: Inadequate investigation increases the possibility of inadvertent infringement; thus, careful investigation is required to find conflicts.
• Lack of a Formal Registry: The absence of a centralized record makes it difficult to determine ownership, highlighting the necessity of thorough usage documentation.
• Restricted Remedies: In India, unregistered trademarks have fewer legal remedies available to them than registered ones, which presents enforcement issues.
• Complexity of Rights Transfer: Careful attention to detail in the assignment agreement is necessary to precisely define the rights in the absence of a formal record.

Ownership Transfer and Unregistered Trademark Rights

After reviewing the filed documentation, the Registrar will assign the assignee ownership of the trademark if no errors are found in the paperwork. Contact the professionals at Kanakkupillai with any inquiries.

In conclusion

Trademarks that are not officially registered are not as legally protected as those that are, although they can still be issued under certain conditions. Giving someone else the right to use a trademark includes assigning an unregistered trademark. It is imperative to see that in the lack of registration, the assignment may entail inherent risks, comprising, among other things, limited legal protection and possible ownership disputes. As a result, to reduce risks and ensure a seamless transfer process, parties engaged in assigning unregistered trademarks should go ahead with caution and think about getting legal advice.

FAQs

1. Is it possible for you to license an unregistered trademark? 

Yes, you can allow people to make use of an unregistered trade mark even though you don’t register it.

2. How may our trademark be assigned?

A person may assign or transfer their trademark by contracts, agreements, etc.

3. What distinguishes assignment from transmission?

Transmission is the process by which rights are transferred from the original owner to a new entity without the owner’s stated action of sale or transfer. It is a more passive process than assignment and usually comprises going through legal channels in order to transfer ownership rights to the recipient.

4. What are the drawbacks of unregistered trademarks? 

Trademarks may be difficult to enforce and have fewer rights compared with unregistered marks.

5. Is It Possible for One Person to assign a Trademark?

Yes. A single person can assign a trademark. The trade mark may be transferred by the owner to a business or to another person.